In a decision the Patent Trial and Appeal Board acknowledged was ‘unusual’ the PTAB upheld several claims of an IPS Group Inc. electronic parking meter patent while at the same time invalidated a couple of the patent’s other claims. The final decision in inter parts review found that petitioner Duncan Parking Technologies had shown that two of the patent’s claims were anticipated by an earlier IPS Group patent, while seven other claims had not been shown to be invalid. A mixed conclusion it not unusual for the board, when a number of claims in a patent are challenged.
But the parts of the patent that was held to be invalid, compared to the parts that were not made for a strange situation. Some of the claims upheld by the board are what are known as independent claims, broader claims that are able to stand alone. The two claims held to be invalid however, are known as dependent claims, which depend upon another claim and are therefore a more narrow claim. “We are cognized that, at first glance, it is logically difficult to reconcile a simultaneous determination that while an independent claim is patentable, a claim dependent therefrom is not, “the board wrote. “Nevertheless, after reviewing the relevant facts and law, we determine that this outcome, while admittedly unusual, is correct for the reasons set forth herein.” wrote the PTAB
Duncan’s invalidity position at trial were based entirely on an earlier IPS Group patent, which Duncan argued described the exact same parking meter. The key question, was whether the earlier patent could be considered prior art. There are several Inventors on both IP Group patents, but David King, who is the founder and CEO of the San Diego-based company is named as an inventor on both patents. The IPS Group argued that David King’s own invention could not be used against him. However, Duncan countered, in part, that another man helped conceive of aspects in the earlier patent – U.S. Patent No. 8,595,054 – that anticipated much of the newer one. The more recent patent is U.S. Patent No. 7,854,310. The [King’054] anticipatory disclosure is ‘by another’… and thus invalidates claims 1-5 and 7-10 of the ‘310 patent,” said the PTAB. As to all seven of the challenged claims however, the board was not convinced. The PTAB found little reason to disbelieves that Mr. King was the sole inventor of the applied portions of King ‘054 patent on which Duncan are relied on to argue that claims 1 – 5, 7, and 9 of the ‘310 patent were allegedly anticipated. However, the PTAB found that the parking meter patent’s two invalidated claims relate to aspects of the face of the parking meter. With respect to those claims, the PTAB said it had a “clearer picture” of who was responsible for the invention. And it was “unquestionably different than the inventive entity of all portions” of the earlier patent, the board said. “In that respect, King’ 054 is clearly ‘by another’ when it comes to claims 8 and 10, the board wrote. “As such after considering the record at hand, we are persuaded by DPT that claims 8 and 10 are considered appropriately as unpatentable.